1. www.FITT-for-Innovation.eu Invention Disclosure FITT (Fostering Interregional Exchange in ICT Technology Transfer)

2. 2 | 31.03.2010 Invention Disclosure Partner Logo Invention disclosure template  An invention disclosure template  To be filled in by inventors with the help of a TT officer (to go past purely administrative forms)  With respect to the patent policy implemented by a PRO  With a focus on the transfer strategy foreseen

3. 3 | 31.03.2010 Invention Disclosure Partner Logo Common definition An invention disclosure, or invention disclosure report, is a confidential document written by scientists or engineers for the use of organisation’s patent department, or by an external patent attorney, to determine whether patent protection should be sought for the invention.

4. 4 | 31.03.2010 Invention Disclosure Partner Logo Three main sections Administrative and contract information on IPR Standard inventorship information Publication foreseen, publications already done and their impact on the invention Contract information if invention is coming from collaborative research Invention description Standard questions on invention description + new, inventive and industrial application criteria Software association (and its importance)

5. 5 | 31.03.2010 Invention Disclosure Partner Logo Three main sections Transfer strategy Formalised strategy of building up a patent portfolio in an INRIA strategic domain Start-up project Identified standardization target Identified and concrete opportunity of transfer through a partnership According to the PRO patent policy (with corresponding questions)

6. 6 | 31.03.2010 Invention Disclosure Partner Logo Obligations at INRIA  Researchers being civil servants, they are obliged to disclose their invention to their employer  The decision to patent or not belongs to the PRO  If they contribute to a patent without informing their employer, they do not receive the patent bonus (introduced by a French law in 2005)  Conversely, the Transfer and Innovation department puts a lot of efforts to transfer the patents, with income being partly distributed to inventors (see Practice Financial incentives – Income distribution)  Strong recommendation to work collectively

7. 7 | 31.03.2010 Invention Disclosure Partner Logo When?  Timing  Implemented at INRIA in July 2008

8. 8 | 31.03.2010 Invention Disclosure Partner Logo Who?  Stakeholders  INRIA headquarters, in particular Transfer and Innovation Department – set up the new policy, follow-up some part of requests  INRIA regional centres: TT officers, researchers  More recently, technology transfer associates (in a given domain) are involved in the analysis of invention disclosures

9. 9 | 31.03.2010 Invention Disclosure Partner Logo Pros & Cons PRO’s  Building researchers’ awareness of IP protection issues and on the necessity of having a transfer strategy  Implementation of the patent policy  A way to trace inventions  An effort to go beyond administrative facts and to have a transfer oriented view with the involvement of transfer staff since the beginning  Audio conference to analyse the invention  Collective effort where the researcher is not left alone CON’s  For some, the template can be seen as too lengthy

10. 10 | 31.03.2010 Invention Disclosure Partner Logo Why ? (1/2)  Rationale: Researchers at PROs were quite often left alone to fill in invention disclosures focusing mainly on technical details;  The process was not clear and not sufficiently supervised: Invention disclosure are now, for some technologies, a first step in identifying transfer opportunities Transfer strategy is to be foreseen soon in the process, possibly changing or letting it evolve over time  It is now a collective effort which starts from the beginning

11. 11 | 31.03.2010 Invention Disclosure Partner Logo Why ? (2/2)  Impact:  Building researchers awareness of IP protection issues and on the necessity of having a transfer strategy  An implementation of the patent policy  A way to trace inventions  An effort to go beyond administrative facts and have a transfer oriented view with the involvement of transfer staff since the beginning  A collective effort where the researcher is not left alone

12. 12 | 31.03.2010 Invention Disclosure Partner Logo Outcome  The process has been formalised and implemented in INRIA activities; every invention disclosure should be done using the new template (with possible iterations)  An audio-conference is organised with the TT officer, the Transfer and Innovation department and the inventors to analyse precisely the invention and its potential

13. 13 | 31.03.2010 Invention Disclosure Partner Logo Suggested Readings  Link to bibliography:  Link to code book: Invention Disclosure Patent Intellectual Property Protection Confidential Information Know-how  Link to related websites: www.inria.fr/valorisation/index.fr